Thursday, December 12, 2013

TTAB Grants Petitioner STP's Summary Judgment Motion After Registrant Admits Everything

Bad things can happy to a party that doesn't respond to admission requests. Respondent Autoplastic, a Russian company, owned a registration for the mark shown immediately below, for various insulating, sealing, and soundproofing products for automobiles. Petitioner STP sought cancellation on the grounds of likelihood of confusion with its registered mark STP for motor oil, brake fluid, and other automotive products, likelihood of dilution by blurring, and abandonment. Respondent denied the allegations of the petition for cancellation, but then it failed to respond to STP's admission requests, and so STP moved for partial summary judgment on the Section 2(d) ground. The Board granted the motion. The Armor All/STP Product Company v. Limited liability company "Autoplastic", Cancellation No. 92056035 (November 14, 2013) [not precedential].

By not responding to STP's admission requests in a timely fashion, respondent was deemed to have admitted them, under FRCP 36(a)(3). The admissions including the following: that the STP mark is famous for automotive products; that the involved marks are highly similar in appearance, audibly indistinguishable, and create highly similar commercial impressions; that the involved goods are similar or related; and that the channels of trade are the same and the consumers overlap. Game, set, and match!

In its opposition to the summary judgment motion, respondent denied that the deemed admissions are accurate, and it attached certain webpages and other documents. The Board was unsympathetic. Respondent could have moved to withdraw or amend the admissions even up to the time of its response to the motion for partial summary judgment. It did not do so.

[R]espondent failed to avail itself of this option. Therefore, it cannot rely merely on "disputing" the effective admissions as it did in its response [to the motion]. An admission that is not withdrawn or amended cannot be rebutted by contrary argument or testimony.

Consequently, the Board deemed the facts set forth in the requests for admission to be conclusively established.

Finding that STP has standing and priority, and concluding that there are no genuine disputes of material fact remaining, the Board granted the motion for partial summary judgment.

Read comments and post your comment here.

TTABlog note: This proceeding was commenced in August 2012, and so the "federal registration" defense to STP's dilution claim was still available, although applicant apparently did not plead it. See Under Armour v. Evade (TTABlogged here).

Text Copyright John L. Welch 2013.


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